Norway’s new Trade Mark Act entered into force on July 1 2010. The new Act mainly represents a modernisation of the old Act and codification of existing case law, but nevertheless introduces a few practically important changes worth mention.
One of the main changes relates to invalidation and revocation of trade mark registration. Previously, if a trade mark had been registered in contravention of the Trade Marks Act, or if the mark after registration had obviously lost its character as a distinctive mark or had become deceptive, or did not fulfil the use requirements, the only way to attack the trade mark registration was by bringing the matter before the courts. The new Act introduces administrative procedures when a mark is requested invalidated or revoked. A mark may be declared invalid if it is registered contrary to valid prior rights or contrary to absolute grounds. It may be revoked if the use-requirements within the last five consecutive years are not met, or if the mark is diluted and has become a generic term.
Since the Norwegian Industrial Property Office (NIPO) maintains the relative grounds examination, the possibility of administrative cancellation of trade marks on the basis of non-use is welcomed by trade mark owners, since administrative proceedings will prove more cost effective and less time consuming than court proceedings. If the NIPO deems itself incompetent to make a decision in such administrative procedures, they may, however, forward the case to court.
Contrary to court proceedings, the parties will not have the opportunity to call witnesses as part of the administrative procedure. Another difference between these two ways of attacking a trade mark registration relates to the costs of the case. While in court proceedings, the losing party will normally have to pay the costs of the winning party, the parties will in administrative procedures cover their own costs.
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| Cecile Bakken |
Bryn Aarflot AS
Kongens gate 15
PO Box 449 Sentrum
NO-0104 Oslo, Norway
Tel: +47 46 90 30 00
Fax: +47 22 00 31 31
mailto@baa.no
www.brynaarflot.com